adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accor v. Value-Domain, Inc.

Case No. D2012-1342

1. The Parties

The Complainant is Accor of Paris, France, represented by Dreyfus & Associés, France.

The Respondent is Value-Domain, Inc. of Osaka, Japan.

2. The Domain Name and Registrar

The disputed domain name <novotel-zurich-airport-messe.com> is registered with Key-Systems GmbH dba domaindiscount24.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2012. On July 2, 2012, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain name. On July 5, 2012, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 11, 2012, the Center transmitted an email to the parties in both Japanese and English language regarding the language of proceedings. On July 12, 2012, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), and the Supplemental Rules, paragraph 4 (d), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2012.

The Center appointed Yukukazu Hanamizu as the sole panelist in this matter on August 17, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The following facts, taken from the Complaint, are uncontested:

The disputed domain name <novotel-zurich-airport-messe.com> was registered on December 10, 2011.

The Complainant operates more than 4,000 economy to upscale class hotels as of December 31, 2011. For nearly 45 years, the Complainant has provided customers with expertise acquired in this business. The Complainant group includes notable hotel chains such as, Pullman, Novotel, Mercure, and Ibis.

More specifically, the Complainant operates 46 hotels in Switzerland and has more than 660 employees in that country as of December 31, 2011. The Complainant operates 5 Novotel hotels and 1 Suite Novotel in that country and one of its trade names is Hotel Novotel Zurich Airport Messe. The Complainant is also present in Japan where it runs 10 hotels as of December 31, 2011.

In addition, the Complainant received the Tourism for Tomorrow Award 2010 from the World Travel and Tourism Council (WTTC).

The Complainant owns the following international NOVOTEL trademarks designated in Japan.

- International Trademark No.785645 registered on June 25, 2002 and covering services in Class 43

- International Trademark No.875041 registered on December 9, 2005 and covering services in Class 43

The Complainant also owns and uses the domain names: <novotel.com>, <novotel.net> and <novotel.org>.

Prior to the commencement of this action, in order to settle the dispute amicably, the Complainant sent a cease-and-desist letter on February 14, 2012 to the Respondent, asking the latter to transfer the disputed domain name <novotel-zurich-airport-messe.com> to the Complainant. The Complainant also sent several reminders on April 22 and 28, 2011 but received no reply from the Respondent.

5. Parties’ Contentions

A. Complainant

The following facts are alleged by the Complainant in the Complaint and have not been disputed by the Respondent.

The Complainant owns and operates several hotels under the trademark NOVOTEL, which is a well-known trademark protected worldwide, especially in relation to hotels and catering services. The Complainant owns the international trademark registrations for NOVOTEL throughout the world, including the Japanese trademark registration Nos.785645 and 875041 in Class 43.

In addition, the Complainant operates, among others, the domain names <novotel.com>, <novotel.net> and <novotel.org> reflecting its trademark in order to promote its services. It mainly communicates on the Internet via its website where Internet users can easily and quickly find and book hotel rooms or benefit from the other range of services available.

a) The disputed domain name is identical or confusingly similar to a trademark or service mark for which the Complainant has rights

The disputed domain name is highly similar to the trademark NOVOTEL and to the Complainant’s trade name for one of the hotels that it operates in Zurich. In addition, the disputed domain name reproduces the Complainant's trademark in its entirety, which previous panels have considered to be well-known (ACCOR v. Jose Andres Buenfil Gomez, WIPO Case No. D2008-1248; Accor S.A. v. Peter Mason, WIPO Case No. D2008-0957; Accor v.Sergey Fomin, WIPO Case No. D2008-0706; and Accor v. Ning Yang, WIPO Case No. DCO2011-0004).

In many UDRP decisions, panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark (The Coca Cola company v. PrivacyProtect.org/Acosta Jose Julian, WIPO Case No. D2010-0335; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; and ACCOR v. Lee Dong Youn, WIPO Case No. D2008-0705).

Despite the addition of the words "airport" and "messe" and the geographical term "zurich", the disputed domain name which incorporates the Complainant's trademark in its entirety is confusingly similar to that trademark (Sanofi-Avenfis, Avenfis Inc., Avenfisub II inc. v. Yur Bar, WIPO Case No. D2010-0663; and Montage Hotels&Resorts, LLC v. Daniel Kirchhof/Unister GmbH, WIPO Case No. D2011-1042). The association of those generic and geographical terms to the Complainant’s trademark reinforces the likelihood of confusion because the disputed domain name refers to the trade name of one of the hotels operated by the Complainant in Zurich.

Furthermore, it has been consistently held that adding geographical terms is insufficient for giving any distinctiveness to a domain name in dispute (Carlsberg A/S v. Personal/decohouse, WIPO Case No. D2011-0972).

Internet users could come to believe that the disputed domain name <novotel-zurich-airport-messe.com> belongs to the Complainant.

Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant's trademark. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant.

Finally, it has been well established that the mere addition of the extension ".com" is not to be taken into consideration when examining the identity or similarity between the Complainant's trademarks and the disputed domain name. It has been held in numerous decisions that the addition of the gTLD suffix does not affect the likelihood of confusion merely because it is necessary for the registration of the domain name itself (Accor v. Noldc Inc., WIPO Case No. D2005-0016; Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A.,
WIPO Case No. D2009-0877).

For all of the above mentioned reasons, the disputed domain name in question is confusingly similar to the trademark NOVOTEL in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled.

b) The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use and register its trademark, or to seek registration for any domain name incorporating said marks.

Furthermore, the Respondent has not demonstrated or established any rights or legitimate interests in the disputed domain name. The registration of several NOVOTEL trademarks has for many years preceded the registration of the disputed domain name <novotel-zurich-airport-messe.com>.

The disputed domain name is so identical to the well-known trademarks NOVOTEL of the Complainant (ACCOR v. Jose Andres Buenfil Gomez-, supra; Accor S.A. v. Peter Mason, supra; Accor v. Sergey Fomin, supra and Accor v. Ning Yang, supra) that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the domain name <novotel-zurich-airport-messe. com>.

Moreover, the Respondent is not commonly known by the name "Novotel", is in no way affiliated with the Complainant, nor authorized or licensed to use the NOVOTEL trademark, or to seek registration for any domain name incorporating said mark. In previous decisions, panels found that in the absence of any license or permission from the Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

The Respondent did not demonstrate, before receiving any notice of the dispute, use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name refers to a website devoted to eye surgery, displaying links directing users towards, amongst others, a Japanese implant center. Such circumstances do not represent a use in connection with a bona fide offering of services.

Furthermore, the Complainant attempted to contact the Registrant by sending several cease-and-desist letters. The Respondent did not reply to any of them.

Panels have repeatedly stated that when the respondent does not avail himself of his right to respond to the complainant, it can be assumed that the respondent has no rights or legitimate interests in the domain names, (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269; AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017). If the Respondent had a right or legitimate interest in connection with the disputed domain name, it would have vigorously defended such rights by promptly replying to the Complainant's cease-and-desist letters. In light of these circumstances, it clearly appears that the Respondent does not have any right or legitimate interest with respect to the disputed domain name (Compagnie Générale des Etablissements Michelin v. Gioacchino Zerbo, WIPO Case No. D2010-0865).

For all of the above-cited reasons, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.

c) The disputed domain name was registered and is being used in bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. The language of paragraph 4(a) (iii) of the Policy requires that bad faith registration and bad faith use be proven.

1) Registration in bad faith

It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. Firstly, the Complainant is well-known throughout the world, including Japan, where the Complainant runs 10 hotels; indeed, as of December, 31, 2011, the Complainant had 209 employees in Japan.

In light of the reputation of the Complainant's trademark NOVOTEL, the Respondent's reproduction of the NOVOTEL trademark in its entirety, combined with the generic terms "airport" and "messe", and the geographical term "zurich", clearly proves that the Respondent was aware of the existence of the Complainant's trademarks and of the hotel Novotel Zurich Airport Messe.

Bad faith has already been found where a domain name is so obviously connected to a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494, and Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).

It has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the registration of the domain name suggests bad faith (Caixa D'Estahis I Pensions de Barcelona ("La Caixa") v. Eric Adam,
WIPO Case No. D2006- 0464, and Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).

Additionally, a quick NOVOTEL trademark search or an Internet search for the term “Novotel” would have revealed to the Respondent the existence of the Complainant and its trademark. The Respondent's failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beaute & Cie, L'Oréal v. 10 Selling, WIPO Case No. D2008-0226).

Moreover, supposing that the Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple search via Google or any other search engine using the keywords "Novotel" shows that all of the top results relate to the Complainant's hotels.

In this day and age of widespread Internet access/usage and advancements in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of the Complainant and its trademarks, as well as the high level of notoriety of the Complainant, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademarks at the time of registration of the disputed domain name.

The Respondent's use of the disputed domain name will cause consumers to mistakenly believe that the disputed domain name is owned or used by the Complainant.

Consequently, in view of the abovementioned circumstances, it is established that the Respondent registered the disputed domain name in bad faith.

2) Use in bad faith

Some elements may be put forward to support the finding that the Respondent also uses the disputed domain name in bad faith.

Bad faith can be found where a respondent "knew or should have known" of a complainant's trademark rights but, nevertheless registered a domain name in which he had no right or legitimate interest (Accor v. Kristen Hoerl,WIPO Case No. D2007-1722).

As previously indicated, there can be little doubt in this case that, the Respondent was aware that NOVOTEL enjoyed a substantial reputation worldwide, specifically in Japan. In light of this knowledge, the Respondent uses the disputed domain name to direct Internet users to a website displaying links directing users towards other websites such as “sugahara.shibu-q.co.jp”.

In doing so, the Respondent is making non-legitimate use of the disputed domain name, with intent for commercial gain to misleadingly divert consumers from the Complainant's official website.

Such use of the disputed domain name was not authorized by the Complainant and the disputed domain name could be used for scamming purposes. Similarly, reproducing famous trademarks in the disputed domain name in order to attract Internet users to the Respondent's own website cannot be regarded as fair use or use in good faith. Indeed, such conduct generates a strong likelihood of confusion for Internet users as to the source, sponsorship, affiliation or endorsement of the website because the Respondent creates a website which could be an official website of the Novotel Zurich Airport Messe. The Respondent's behavior highlights its bad faith use of the disputed domain name (Compagnie Générate des Etablissements Michelin (Michelin) v. BMtexnologiya MMC. Tural Malikov, WIPO Case No. D2010-2150).

Moreover, there is no doubt that many Internet users attempting to visit the Complainant's website have ended up on web pages set up by the Respondent. Indeed, the disputed domain name is confusingly similar to the Complainant's trademark and previous Panels have ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant's site to Respondent's site" (L'oreal SA v. 張容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd,
WIPO Case No. D2010-1318, and Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095).

Such use of the disputed domain name was not authorized by the Complainant; in this respect, previous UDRP panels have considered that in the absence of any license or permission from the Complainant to use such widely known trademarks, no actual or contemplated bona fide or legitimate use of the domain names could reasonably be claimed (Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281).

It is more likely than not that the Respondent's primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's trademark rights, through the creation of an initial interest of confusion.

Therefore, it is established that the Respondent both registered and used the disputed domain names in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Japanese.

Pursuant to paragraph 11 of the Rules, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding in regard to all the circumstances. In particular, it is established practice to take notice of paragraphs 10(b) and (c) of the Rules. In other words, it is important to ensure fairness to the parties and to maintain an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties nor result in undue delays to proceedings (Lacoste Alligator S.A. v. Wang Liming,WIPO Case No. D2009-0559).

The Complainant has requested that English be the language of the proceedings. On the other hand, the Respondent did not comment on the language preferences.

Having considered all the matters above, this Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceedings in this case.

6.2. Three Conditions Specified in Paragraph 4(a) of the Policy

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must prove that all of the following three conditions be satisfied:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

(1) Based on the uncontested allegations provided by the Complainant, the Panel finds that the Complainant has established that it is the owner of the registered trademarks NOVOTEL and that these trademarks are well-known in relation to hotel services.

(2) The disputed domain name consists of five different words.

The word “novotel” comprises the Complainant’s registered trademark.

The words “airport” and “messe” are generic terms. The word “zurich” is a geographical term. The Panel considers that the addition of the generic terms and geographical term, especially when added to a well-known trademark are not sufficient to avoid confusion.

The word “.com” is the gTLD suffix and is not to be taken into consideration when examining the identity or similarity between a complainant’s trademark and disputed domain name because it is necessary for the registration of the domain name itself.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark NOVOTEL.

B. Rights or Legitimate Interests

By the terms used in paragraph 4(a) of the Policy, it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent with means to demonstrate its rights to or legitimate interests in the disputed domain name in responding to the Complaint. If the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, the burden of production is shifted to the Respondent to prove the contrary.

The disputed domain name refers to a website devoted to eye surgery, displaying links directing users towards other sites.

The Complainant states that the Respondent is not affiliated with the Complainant in any way nor has it authorized the Respondent to use or register its trademarks or to seek the registration for any domain names incorporating said trademarks.

The Respondent has not provided a response to the allegations set forth by the Complainant, though it has been given opportunities to do so.

Thus, there is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.

Taking into consideration the absence of a Response, the Complainant has satisfied the second condition of paragraph 4(a) of the Policy and has established that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel finds that the Complainant is the owner of the registered trademark NOVOTEL and its trademark is well-known in relation to hotel services. In addition, the Complainant is present in Japan where it runs 10 hotels and in Switzerland where it runs the Hotel Novotel Zurich Airport Messe.

The disputed domain name consists of five different words. The word “novotel” comprises the Complainant’s registered trademark. The words “airport” and “messe” are generic terms. The word “zurich” is a geographical term. The word “.com” is the gTLD suffix. In addition, the disputed domain name is identical with the hotel’s name which the Complainant runs in Switzerland.

In addition, the disputed domain name refers to a website devoted to eye surgery displaying links directing users towards other sites.

The Complainant’s trademark NOVOTEL is well-known and the disputed domain name is identical to the hotel name operated by the Complainant.

The failure of the Respondent to respond to the Complainant’s cease-and-desist letter and reminders further supports an inference of bad faith.

The above-mentioned circumstances lead the Panel to conclude that the disputed domain name has been registered and used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been satisfied.

Therefore, in accordance with paragraph 4(b)(iv) of the Policy, the above findings lead to the conclusion that the disputed domain name has been registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <novotel-zurich-airport-messe.com> be transferred to the Complainant.